This information is provided to assist Colorado State University (CSU) faculty, staff, students and employees in patenting or licensing the results of their work. This document contains general information only and should not be considered all-inclusive. Please use this guide in conjunction with the Summary of the Technology Transfer Process. For further information on patents and licensing please refer to Section J of the Academic Faculty and Administration Staff Manual or call the Vice President for Research (VPR) Office (970.491.7194) or Colorado State University Research Foundation (CSURF) (970.482.2916).
Click on the questions below for answers to the questions.
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| What is an Invention? |
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A broad definition of an invention is "anything that is new". A patentable invention, however, is "the discovery or creation of a new material, a new process, a new use for an existing material, or any improvement of any of these". The inventive process consists of two steps: conception (mental formulation of the complete means by which a desired result is achieved) and reduction to practice (physically constructing and/or carrying out the mental formulation and testing to demonstrate the invention achieves the desired results). |
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| What is a Patentable Invention? |
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| Patent law states that the invention must be "New", "Useful", "Non-obvious" and "Enabling." In the broadest sense, the "New" or novelty requirement states that the technology must not have been available to the public prior to the patent application being filed. The requirement for "Useful" or utility states that a technology must have a useful purpose and perform the intended purpose. The "Enabling" requirement states that the technology be described in sufficient detail and in the "best mode of practice" known at the time the patent application is filed. "Non-obviousness" means that a person with "ordinary skill in the art" would not be likely to develop the same invention knowing all there was to know in the prior art. Of all the requirements, this is the most difficult requirement to satisfy, as it is a theoretical standard. |
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| What is a Provisional Patent Application? |
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| A provisional application can be filed in the U.S. Patent & Trademark Office without formal claims, oaths or prior art information. This type of application was designed to provide inventors a low cost patent filing opportunity and give U.S. applicants parity with foreign applicants under the GATT Uruguay Round Agreements. The provisional patent application must be enabling (along with any drawings) and name all of the inventors. The term of the provisional is for one year from the date of filing and is excluded from the term of the patent. In order to use the priority date of the provisional application, a utility application must be filed within the one-year period specified above. A provisional application filed prior to public disclosure also preserves the right to file patent applications outside the U.S. |
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| What is a Patent? |
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A Patent is a federal grant, based on an invention, which gives the holder the right to exclude others from making, using, or selling the invention for a limited period of time. In the United States, the term of a patent filed before June 8, 1996 is 17 years from the date that a patent is issued. Due to changes in patent law, the term for patents filed after June 8, 1996 is 20 years from the date that the patent application is filed.
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| What should be done when an invention is made? |
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An Invention Disclosure Form should be completed and returned either to the VPRIT Office or to CSURF. The forms are available from the VPRIT Office at 491-7194 or from CSURF at 482-2916, or visit the respective Web Sites at www.research.colostate.edu and www.CSURF.org.
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| What is an Invention Disclosure Form? |
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The Invention Disclosure Form, also often referred to as a "disclosure", is the first step in the patent process. It is an important document, signed by all the inventors, that is used to record what has been invented (the embodiment of the invention) and the circumstances under which the invention was made. The Invention Disclosure Form provides the basis for determining the patentability and commercial utility of the invention.
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| How does the CSU Patent Program work? |
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The VPRIT Office administers the CSU Patent Program. The Assistant Vice President for Research acts as the University Patent Officer. CSURF is the designated agent of the University to manage the intellectual property of the University with respect to commercialization.
A series of steps are involved in the patent process:
- Making of an invention by faculty, staff or students.
- The inventor(s) files a written Invention Disclosure with CSURF and VPRIT Office.
- CSURF works with the inventors to determine whether patent/licensing should be pursued (alternative disposition of the technology may also be explored).
- CSURF works with the inventors to develop a list of potential commercial partners, contacting such companies and developing a protection and licensing strategy. Patenting and/or licensing are pursued at CSURF expense.
- If the technology is not pursued the technology may be returned to the funding agency (if required) or the inventor(s) for his/her own disposition.
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How are revenues from licensing distributed? |
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Net revenues (after recovery of direct expenses) accruing from patented and/or licensed inventions are distributed as follows:
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Net Royalties |
| Entity |
Percent |
| Inventor(s) |
35% |
| College(s)/Department(s) |
10% |
| VPRIT |
15% |
| CSURF |
40% |
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| When should an Invention Disclosure Form be prepared and submitted? |
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The Invention Disclosure Form should be completed as soon as the practice of the invention can be completely described. Timeliness in submitting disclosures is very important, as patent rights can be lost if an invention is prematurely disclosed publicly.
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| What is a "Public Disclosure" and what are its implications? |
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| Generally, public disclosure is any communication to someone not obliged to keep the communication confidential. For patent purposes, such a public disclosure can defeat patentability if it contains sufficient detail about the invention to enable a person with "ordinary skill in the art" to duplicate it. Thus, there are two essential elements to public disclosure in patent law: It must be public and it must be enabling. Once an enabling publication is made, U.S. patent law allows one year of grace to file for a U.S. patent, HOWEVER, MOST FOREIGN PATENT RIGHTS ARE LOST IMMEDIATELY UPON PUBLICATION. As publication may have significant impact upon patent rights, careful planning and coordination is needed by the inventor and the technology transfer staff to ensure rights can be maintained. |
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| What are examples of "Public Disclosure"? |
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- Written publications: The publishing of a manuscript, book chapter, journal article, proceedings, thesis, pre-print, and the like are forms of publication.
- Oral Presentations: Oral presentations may also constitute public disclosures, but are sometimes held not to be public disclosures for two reasons. It's harder to communicate the essence of an invention orally, and it's harder to establish afterward exactly what was communicated.
- Prototypes and Samples: Providing prototypes and samples of an invention can be a publication, depending on the circumstances. If they are provided in order to be used for their intended purpose (or if they are so used despite the intent), then publication has occurred. If they are provided only for testing or evaluation, then publication has probably not occurred.
- Sale or Public Use: Any sale or public use of an invention is a publication. It has also been held that offering a product for sale (whether or not anyone buys) is a publication.
- Meetings and Other Communications: Meetings with peers employed by the same organization are generally not publications, but the same meetings are publications if peers from other institutions are involved.
- Grant Proposal Submittals: It is common for technical details to be included in proposals to potential research sponsors. Proposals submitted to agencies of the Federal Government were publications, since they were accessible under Freedom of Information laws. Recent changes have eliminated that problem. However, affirmative action by applicants is necessary to protect patentable details revealed in a grant proposal. The first page of the proposal should carry the caption: CONFIDENTIAL THIS PROPOSAL CONTAINS POSSIBLE PATENTABLE SUBJECT MATTER ON PAGES XX – YY
List only those pages containing technical details; then write the word "CONFIDENTIAL" on the top of each such page (but only on those with technical details). |
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| Are there useful guidelines for publication that minimize the possibility of the statutory bar? |
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Specific advice should always be sought from VPRIT or CSURF to avoid prior publication problems. However, the following guidelines may help in planning publication:
- If it is believed that a certain invention may be patentable, the inventor may write or talk about the very broad aspects of the invention, carefully avoiding information that would be enabling. Speculation for the record about the possibility of inventing something is not a good idea as there is the danger of someone stealing the idea and there is the possibility of losing patent rights before they have been perfected.
- If an enabling publication is made, most foreign rights will be lost but a U.S. patent application may still be filed within one year of the date of such publication.
- Ideally, U.S. patent protection should be sought prior to publication or disclosure. This would secure early protection in the U.S. and gain a year in which to consider the desirability of foreign patents.
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| What exactly must be disclosed to the University? |
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All University faculty members, staff, employees and students are required to submit a disclosure to the University on any invention that is or may be patentable, even if the invention was made outside the scope of his/her work.
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| What if an invention is made on an employee’s own time? |
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An employee's invention, regardless of whether University time or resources are used, must be disclosed according to University procedures. However, if an employee believes an invention to be his/her own, the disclosure form may be accompanied by an explanation of the circumstances to the VPRIT Office, who will then make a determination on ownership of the invention.
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| What about Non-Patentable discoveries? |
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An invention or discovery that may not meet patent law criteria may still have commercial utility and value and should be disclosed to the University.
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| Why should a useful discovery not thought to be patentable be disclosed? |
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It is the responsibility of CSURF and VPRIT Office to make the decision on patentability, not that of the disclosing party. It is also important to note that the University may be able to license an invention, whether or not it is patentable, if commercial firms have an interest in it.
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| Are there requirements for disclosure of invention to funding sources? |
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If an invention is made on federally funded research, the University must notify the federal agency of the invention disclosure and whether it elects to retain title to the invention. Other sponsored research agreements with other government entities or private industry may also impose disclosure requirements.
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| Are all inventions worth patenting? |
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| An invention may be useful, novel, and non-obvious and still not repay the expense of filing and prosecuting the patent application to the point of issuance or defending it once issued. Thus, before CSURF decides to proceed with seeking patent protection, consideration is given to any patent/licensing obligations due the sponsors of the research, the commercial utility of the invention, its competitive superiority, the necessity for extensive development work, and the potential to find a company willing to pay for a license to the invention. As the costs incurred in filing, prosecuting and defending patents are significant, the decision to proceed with patent/licensing must be deliberate and financially justified. |
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| Are laboratory records important? |
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Lab and other records are vital in obtaining and defending a patent. The following set of rules will produce legally defensible documents for patent protection:
- Use a bound, pre-numbered notebook for records, making entries on a daily basis. This format provides a day-to-day chronology.
- Use the notebook to record the conception of the invention, laboratory data, drawings, and eventual reduction to practice. Each entry should have a title, date and be continued on successive pages.
- Make entries in ink and do not erase; draw a line through mistakes in the text or drawings and enter the material in corrected form. Draw a line through blank spaces on the page.
- Separate sheets and photographs, which cannot be incorporated into the notebook pages, should be referred to in an entry.
- Sign and date all entries at the time they are made, and have them witnessed at least once a month. The witness should be an individual who is capable of reading the material and understanding it, yet was not involved in producing it. Additional witnesses should be obtained when something important or highly unusual is discovered. Remember that an inventor and his co-inventors cannot serve as their own witnesses.
- Set aside a time for making notebook entries and observe it. Have two or more colleagues serve as witnesses on a regular basis.
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| Who are the inventors? |
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Naming the wrong inventors may invalidate a patent. Inventors are only those individuals who had "inventive" input to the process, not those who merely carried out the directions and/or ideas of others. Therefore, colleague(s), technician(s), or student(s) who have been involved in or carried out the research may not necessarily be inventors.
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| What are the rights of co-inventors? |
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Joint ownership is implicit where there are co-inventors. However, the University and CSURF leave it to the inventors to decide and agree between (among) themselves how net royalties due the inventors will be divided. In the absence of written instructions to the contrary, CSURF will distribute the inventors net royalties equally between (among) the parties.
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| What about copyrights and copyrightable materials? |
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In general, the University copyright policy follows the intent and guidelines of the patent policy with regard to rights, equity and ownership except for the publication of textbooks. Royalties derived from textbook publication shall be the sole property of the author(s). Assistance and information relative to copyrighting University material should be obtained from VPRIT or CSURF.
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